Registering trade marks for retail services officially arrives

Following the seminal EU Trade Mark Board Appeal Decision in the 1998 case of Giancomelli, the UK Trade Marks Registry has finally taken official notice by issuing a practice note on the registration of trade marks for retail services

Topic: Brands

Who: The UK Trade Marks Registry

When: November 2000

Where: London

What happened:

Following the seminal EU Trade Mark Board Appeal Decision in the 1998 case of Giancomelli, the UK Trade Marks Registry has finally taken official notice by issuing a practice note on the registration of trade marks for retail services, something which has been impossible in the UK and much of the rest of Europe up until recently.

In the new rules, simply applying to register for "retail services" is not acceptable. The applicant must refer to the "bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods". In the trade mark application the nature of the retail services and the market sector must also be stated.

Also, the means by which the prospective purchaser views the products must be given. For example, by way of a traditional retail outlet, a catalogue, or telecommunication in the case of e-tail. Care should be taken here, however, as the Registry indicates that if only the applicant's own products can be viewed, for instance on a manufacturer's home site, there is doubt as to whether a sufficiently broad range of products is being brought together for viewing to enable any registration for "retail services" as such. Ideally, various products from different manufacturers should be offered.

Separately, for e-tail and mail order the registry note lists a number of descriptions of fields of activity which will be rejected as too vague if they appear on the trade mark application. These include "e-commerce", "internet shopping", "e-trading" and "mail order".

When the Registry comes to process a trade mark application it goes through a standard procedure of checking for existing marks which might conflict with the mark being applied for. The Registry's guidance note tells us that when it comes to this stage in dealing with an application to register a mark for "retail services", it will identify the principal goods being sold and then see if there is an existing registration of a conflicting mark for that type of product. For example, an application to register SNIBBO for retailing leather goods will trigger a check for SNIBBO-like marks already registered for leather products. If one is found then the retail services application will have a problem!

Why this matters:

It was always an anomaly that a trade mark could not be registered for "retail services", necessitating applications by retailers to register their marks for each and every type of product which they sold in store. This inequity has now been rectified, but the UK and other European trade mark Registries will still be astute to throw out any application which suffers from the vagueness which the courts feared when rejecting the idea of "retail service" trade marks in the first place. Those applying to register marks for retail services will have to feel their way in terms of testing and probing the Trade Mark Registry's approach in this area, but these guidance notes certainly offer a helpful starter in charting this virgin territory.